Ex Parte Wahlstrand et al

Patent Trial and Appeal Board

Jul 19, 2013

10731869 (P.T.A.B. Jul. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARL D. WAHLSTRAND,
RUCHIKA SINGHAL, and ROBERT M. SKIME
____________

Appeal 2010-000818
Application 10/731,869
Technology Center 3700
____________

Before JOHN C. KERINS, JAMES P. CALVE, NEIL T. POWELL,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-31 and 33-61. App. Br. 3. Claim 32 is cancelled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-000818
Application 10/731,869

2
CLAIMED SUBJECT MATTER
Claims 1, 23, 39, 42, and 56 are independent. Claim 1 is reproduced
below:
Claim 1: An implantable medical device comprising:
a first module that includes control electronics within a
first housing;
a second module that includes a second housing; and
an overmold that at least partially encapsulates the first
and second housings,
wherein the first and second housings are coupled, and
the coupling of the first and second housings allows the
housings to have a plurality of degrees of freedom of movement
relative to each other.

REJECTIONS
Claims 1-4, 6-9, 11-25, 27-30, 33-44, 46-49, 51-54, 56, and 58-61 are
rejected under 35 U.S.C. § 102(e) as being anticipated by Berrang (US
6,358,281 B1; iss. Mar. 19, 2002).
Claim 55 is rejected under 35 U.S.C. § 102(e) as being anticipated by
Berrang, or in the alternative, is rejected under 35 U.S.C. § 103(a) as being
obvious over Berrang.
Claims 5, 10, 26, 31, 45, 50, and 57 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Berrang.
Claims 1-31 and 33-61 are provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-23 of copending Application No. 10/731,638 (now U.S. Patent
No. 7,212,864), claims 1-14 of copending Application No. 10/730,878 (U.S.
Publication No. 2004/0176816), claims 1-23 of copending Application No.
10/731,699 (U.S. Publication No. 2004/0172090), claims 1-54 of copending
Appeal 2011-000818
Application 10/731,869

3
Application No. 10/730,873 (now U.S. Patent No. 7,242,982), claims 1-27
of copending Application No. 10/731,867 (U.S. Publication No.
2004/0176673), and claims 1, 2, and 14-16 of copending Application No.
10/731,868 (U.S. Publication No. 2004/0173221).
ANALYSIS
Claims 1-4, 6-9, 11-25, 27-30, 33-44, 46-49, 51-54, 56, and 58-61 as
anticipated by Berrang
The Examiner found that Berrang discloses first and second modules
where the first module (housing 3) contains electronics 21 and the second
module (housing 2) contains a rechargeable battery 18, and also discloses an
overmold (bridge 6) that partially encapsulates the first and second housings
2, 3 as depicted in Figure 1. Ans. 4-5. The Examiner considered the bridge
6 to be an overmold finding that “[t]he bridge partially encapsulates, and
thus unites, the edges of the two separate housings.” Ans. 7-8.
Appellants argue that the bridge 6 of Berrang is not an overmold and
while bridge 6 connects housing sections 2, 3, Berrang does not disclose a
bridge 6 that at least partially encapsulates first and second housings of first
and second modules, as recited in independent claims 1, 23, and 42. App.
Br. 4, 5-6.1 Appellants argue that Berrang discloses bridge 6 as a component
that is placed between the housing sections 2, 3 and describes the bridge 6 as
a “connecting bridge between said sections.” App. Br. 5.
The Examiner has not established by a preponderance of evidence that
Berrang discloses an implantable medical device that includes “an overmold

1 All citations to Appellants’ arguments refer to the Appeal Brief filed on
April 17, 2009 as a Response to Notification of Non-Compliant Appeal
Brief. All other citations to the Appeal Brief refer to the Appeal Brief that
was filed on February 19, 2009.
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Appeal 2011-000818
Application 10/731,869

5
what structure corresponds to the bridge 6 in Figure 2.2 The Examiner’s
finding that the bridge 6 encapsulates housing sections 2, 3 because it unites
those sections (Ans. 7-8) is inconsistent with the language of claims 1, 23,
and 42, which recite an overmold that encapsulates, and inconsistent with an
ordinary and customary meaning of “encapsulate” which includes “[t]o
enclose in or as if in a capsule.” Academic Press Dictionary of Science and
Tech., retrieved at http://www.credoreference.com/entry/apdst/encapsulate
(last viewed Jul. 16, 2013). Appellants use “encapsulate” in this manner by
disclosing that the device includes an overmold 48 that at least partially
encapsulates each of the housings 36, 38, and 40 as illustrated in Figure 3.
Spec. 14, para. [0057]. As such, we do not sustain the rejection of claims 1-
4, 6-9, 11-25, 27-30, 33-38, 42-44, 46-49, 51-54, and 58-60.
Claims 39-41
Independent claim 39 recites an implantable medical device that
comprises “a hermetic interconnect member that flexibly couples the first
and second housings.” The Examiner found that “the pliable bridge unites
the two housings and as a result acts as a hermetic interconnect member.”
Ans. 9. Appellants argue that Berrang discloses the bridge structure 6 as
comprising a pliable metal and that the Examiner has not offered any
support for finding that the bridge 6 is hermetic. App. Br. 11.

2 The Examiner’s failure to identify which elements of Berrang’s device
comprise the housings beyond the composite elements 2 and 3 makes it
problematic to determine whether the bridge 6 encapsulates some portion of
an unidentified housing. See App. Br. 4. To the extent the Examiner relies
on the entire elements 2, 3 as the housings, the bridge 6 appears to be
encapsulated within those housings.
Appeal 2011-000818
Application 10/731,869

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The Examiner has not established by a preponderance of evidence that
bridge 6 is “a hermetic interconnect member that flexibly couples the first
and second housings” as recited in claim 39. Berrang discloses that a pliable
bridge connects two hermetically sealed housing sections. Abstract; col. 4,
ll. 5-12; col. 11, ll. 55-60 (because internal components of housing sections
2, 3 are not all biocompatible, they must be hermetically encapsulated). The
Examiner has not explained how such disclosure necessarily means that the
bridge 6 also is hermetically sealed when each housing section 2, 3 is
individually hermetically sealed.3 See In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (“Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”). We do not sustain the rejection of
claims 39-41.
Claims 56 and 61
Independent claim 56 recites an implantable medical device that
comprises a first module comprising control electronics in a first housing, a
second module comprising a recharge coil in a second housing, and a third
module comprising a rechargeable power source in a third housing, and “an
overmold that at least partially encapsulates the first and third housings.”
The Examiner again found that Berrang discloses that a bridge 6 is an
overmold that encapsulates a first housing for an electronics 21 module and

3 An ordinary, customary meaning of “hermetic” includes “[m]ade airtight,
e.g., by fusion or sealing.” Academic Press Dictionary of Science and Tech.,
retrieved at http://www.credoreference.com/entry/apdst/hermetic (last
viewed Jul. 16, 2013). Appellants use “hermetic” in this manner in their
Specification. See Spec. 2, para. [0004]; Spec. 5, para. [0016]; Spec. 11,
para. [0048].
Appeal 2011-000818
Application 10/731,869

7
a second housing for a rechargeable battery, and Figure 17 discloses a third
module as a coil that is partially encapsulated by an overmold as shown in
Figure 17. Ans. 9-10; see Ans. 5.
Appellants argue that Berrang does not disclose an overmold that at
least partially encapsulates a first housing for a first module with control
electronics and a third housing for a third module with a rechargeable power
source. App. Br. 13; Reply Br. 10-12. As discussed supra for claims 1, 23,
and 42, the Examiner has not established that bridge 6 is an overmold that
partially encapsulates a first housing for an electronics module and another
housing for a rechargeable power source. We do not sustain the rejection of
claims 56 and 61.
Claim 55 as anticipated by, or unpatentable over, Berrang
Claim 55 depends from claim 42 and recites that the therapy delivery
circuit of the implantable medical device of claim 42 comprises a pulse
generator. The Examiner found that this feature is necessarily included in
Berrang because Berrang discloses a totally implantable system. Ans. 6.
We agree with Appellants that the rejection of claim 55 cannot be sustained
for at least the reasons set forth for claim 42. App. Br. 14.
Claims 5, 10, 26, 31, 45, 50, and 57 as unpatentable over Berrang
Because we do not sustain the rejection of independent claims 1, 23,
42, and 56, from which claims 5, 10, 26, 31, 45, 50, and 57 depend, we do
not sustain the rejection of claims 5, 10, 26, 31, 45, 50, and 57.
Provisional Obviousness-Type Double Patenting Rejections
Appellants contend that a Terminal Disclaimer was filed on August
20, 2008, to overcome the asserted double patenting rejections. App. Br. 17.
Appeal 2011-000818
Application 10/731,869

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The Examiner does not dispute this assertion. Our review of the file history
confirms that Appellants did file such a Terminal Disclaimer, and that the
Terminal Disclaimer was approved prior to Appellants’ filing of the Notice
of Appeal. We do not sustain the provisional double patenting rejections of
claims 1-31 and 33-61.
DECISION
We REVERSE the prior art rejections of claims 1-31 and 33-61.
We REVERSE the provisional obviousness-type double patenting
rejections of claims 1-31 and 33-61.

REVERSED

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